Ex parte QUINN et al. - Page 4

          Appeal No. 1997-3727                                                        
          Application 08/416,127                                                      

          subject of a claim when the reference discloses every feature               
          of the claimed invention, either explicitly or inherently (see              
          Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d                
          1358, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital                
          Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388                  
          (Fed. Cir. 1984)).                                                          
               Regarding claim 1, the crux of the issue is whether                    
          Sugimoto anticipates the claimed limitation “causing ... the                
          chip ... to release ... by applying a lateral force, in a                   
          direction substantially parallel to a main surface of the                   
          substrate, to the chip” [emphasis added].  We agree with                    
          Appellants that Sugimoto                                                    
          shows a force being applied to the chip by elements 6 and 7 in              
          a direction perpendicular, rather than parallel, to the main                
          surface of the substrate 2.  The Examiner asserts [answer,                  
          page 2] that “it is inherent in the process that the bowed                  
          substrate 1 applies a lateral force to the chip, in a                       
          direction substantially parallel to the surface of the                      
          substrate adhered to the chip, causing the substrate to,                    
          ‘come(s) off slightly’ from the chip.”  We are of the view                  


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